Ex parte ETAO HUANG - Page 6




          Appeal No. 96-4017                                                          
          Application 08/217,544                                                      



                    The proper test for obviousness is what the combined              
          teachings of the references would have suggested to those having            
          ordinary skill in the art.  See Cable Elec. Prods., Inc. v.                 
          Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-887 (Fed.             
          Cir. 1985); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,               
          1096 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 208 USPQ            
          871, 881 (CCPA 1981).  The law followed by our court of review,             


          and thus by this Board, is that "[a] prima facie case of                    
          obviousness is established when the teachings from the prior art            
          itself would appear to have suggested the claimed subject matter            
          to a person of ordinary skill in the art."  In re Rinehart, 531             
          F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).  A rejection                
          based on  103 must rest on a factual basis, with the facts being           
          interpreted without hindsight reconstruction of the invention               
          from  the prior art.  In making this evaluation, the examiner has           
          the initial duty of supplying the factual basis for the rejec-              
          tion he/she advances.  The examiner may not, because he/she                 
          doubts that the invention is patentable, resort to speculation,             
          unfounded assumptions or hindsight reconstruction to supply                 
          deficiencies in the factual basis.  See In re Warner, 379 F.2d              


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